Ex Parte Pamley et al

Patent Trial and Appeal Board

Sep 26, 2018

14226441 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/226,441 03/26/2014
58127 7590 09/26/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Marc Richard Pamley
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
RPS920130245USNP(710.375) 3242
EXAMINER
LEE, CHUN KUAN
ART UNIT PAPER NUMBER
2181
MAIL DATE DELIVERY MODE
09/26/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC RICHARD P AMLEY, ALAN LADD PAINTER,
OMAR ALI ALI, and TIMOTHY SAMUEL FARROW
(Applicant: Lenovo Pte. Ltd.)
Appeal2018-003378
Application 14/226,441 1
Technology Center 2100
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and institute a new ground of rejection under the
provisions of 37 C.F.R. § 41.50(b).
1 Appellant/ Applicant identifies itself, Lenovo Pte. Ltd., as the real party in
interest. App. Br. 3.
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Application 14/226,441
THE INVENTION
The disclosed and claimed invention is directed to detection and
identification of supported connection protocols in a multi-purpose storage
bay. See Spec. ,r 3. 2
Claims 1 and 20, reproduced below with the disputed limitations
italicized, is illustrative of the claimed subject matter:
1. A method, comprising:
providing a multi-protocol connector in an electronic
device for connecting at least one storage device thereto;
determining, using an operative coupling between the
multi-protocol connector and the electronic device, if the
electronic device supports one or more protocols of the multi-
protocol connector prior to connecting a device to the multi-
protocol connector and without communicating with the device;
and
providing an informational prompt for each determined
protocol of the multiprotocol connector that the electronic device
supports.
20. A product, comprising:
a storage device having code stored therewith, the code
being executable by a processor and comprising:
code that determines, using an operative coupling between
a multi-protocol connector and an electronic device, if the
electronic device supports one or more protocols of the multi-
protocol connector prior to connecting a device to the
multiprotocol connector and without communicating with the
device; and
2 We refer to the Specification filed Mar. 26, 2014 ("Spec."); Final Office
Action mailed May 31, 2017 ("Final Act."); Appeal Brief filed Oct. 31, 2017
("App. Br."); Examiner's Answer mailed Dec. 8, 2017 ("Ans."); and the
Reply Brief filed Feb. 8, 2018 ("Reply Br.").
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Application 14/226,441
code that provides an informational prompt using an
illumination element for each determined protocol of the multi-
protocol connector that the electronic device supports.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Celebioglu et al. US 2003/0021272 Al
(hereinafter "Celebioglu")
Pance et al. US 2011/0038114 Al
(hereinafter "Pance")
Iskandar et al. US 2015/0067226 Al
(hereinafter "Iskandar")
REJECTION
Jan.30,2003
Feb. 17, 2011
Mar. 5, 2015
Claims 1-20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Celebioglu, Iskandar, and Pance. Final Act. 4.
ANALYSIS
\Ve have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner ened. In reaching this decision, we consider
all evidence presented and all arguments made by Appellant.
Claims 1-19
The Examiner finds Pance' s illuminating of lights prior to connection
without the cable being connected teaches determining prior to connecting
and without communicating with the device. Final Act. 5 (citing Pance ,r 70,
Figs. 9A-9B). Specifically, the Examiner finds Pance's identification of a
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Application 14/226,441
cable/wire is done wirelessly and without being physically connected to the
connector/port on the system/host. Ans. 9.
Appellant argues Pance teaches a device that can wirelessly
communicate with an approaching connector and attain identifying
information associated with the connector, but that wirelessly
communicating is distinguishable from the claimed without communicating
with the multi-protocol connector. App. Br. 17. According to Appellant, the
claimed "communicating" (i.e., "without communicating") is not limited to
only wired communications, but "can also be extended to wireless
communication as well." App. Br. 17-18.
We are persuaded by Appellant's argument as the Examiner has not
identified sufficient evidence or provided sufficient explanation as to how
Pance' s determination/identification being done wirelessly teaches the
determination being done "without communication" as recited in claim 1.
Claim 1 recites "providing a multi-protocol connector in an electronic
device for connecting at least one storage device thereto" and "determining,
using an operative coupling between the multi-protocol connector and the
electronic device, if the electronic device supports one or more protocols of
the multi-protocol connector prior to connecting a device to the multi-
protocol connector and without communicating with the device." In light of
Appellant's Specification and the words recited in the claim, we construe the
claimed "a device" and "the device" to be the "storage device," and that the
claim is directed to determining if the electronic device supports protocols of
the connector prior to connecting the storage device to the connector and
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Application 14/226,441
without the connector communicating with the storage device. 3 See Spec.
,r 33 ("a user will be able to determine in advance whether a connector 303a-
d is capable of supporting one type of drive or another, without needing to
actually connect the driver and/or test its functioning via the connector").
The cited sections of Pance (Final Act. 5; Ans. 9), teach that
"connector 112 may be equipped with a radio frequency identification
("RFID") tag 114," "the device 10 may seek for RF signals only after
sensing an object in proximity to the ports as determined using proximity
sensors including RF, IR, inductive, and/or capacitive sensing technologies,"
and the "RFID tag 114 may provide identifying information, such as: the
type of connector; type of device that is coupled to the connector 112; device
ID; etc." Pance ,r 70. In other words, Pance teaches identifying the type of
connector using RFID tags and RF signals with proximity sensors (i.e., using
a wireless connection). However, because the sections of Pance cited by the
Examiner and on the record before us teach identifying the type of connector
using a wireless connection, they do not teach identifying the type of
connector without communicating with the device. Therefore, we agree with
Appellant that the Examiner's finding that Pance teaches the disputed
limitation is in error because it is not supported by a preponderance of the
evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
3 In the event of further prosecution, the Examiner should consider whether
"a device" and "the device," as claimed, without the term "storage" is
sufficiently clear under 35 U.S.C. § 112. Although the Board is authorized
to enter a new ground of rejection to reject claims under 37 C.F.R.
§ 4I.50(b), no inference should be drawn when the Board elects not to do so.
See MPEP 1213.02.
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Application 14/226,441
(Examiner's burden of proving non-patentability is by a preponderance of
the evidence).
Accordingly, we are constrained on the record before us to reverse the
Examiner's § 103 rejection of independent claim 1, along with the § 103
rejection of independent claim 11, which recites limitations commensurate
in scope to the disputed limitation discussed above. See App. Br. 18.
Because we agree with at least one of the arguments advanced by Appellant,
we need not reach the merits of Appellant's other arguments. Accordingly,
we reverse the Examiner's§ 103 rejection of dependent claims 2-10 and
12-19.
Claim 20
Where a claim is so indefinite that "considerable speculation as to
meaning of the terms employed and assumptions as to the scope of such
claims" is needed, it would be imprudent for us to pass judgment on such a
rejection (under§ 103(a)). See In re Steele, 305 F.2d 859, 862 (CCPA
1962). With regard to claim 20, we are unable to determine whether the
Examiner's obviousness rejection is proper because discerning the proper
scope of the claim requires undue and improper speculation, as discussed in
our new ground of rejection below.
We, therefore, reverse pro form a the prior art rejections of claim 20
under 35 U.S.C. § 103. We emphasize that this is a technical reversal of the
rejections under 35 U.S.C. § 103, and not a reversal based upon the merits of
the rejection. However, as discussed below, we enter a new ground of
rejection, and therefore affirm the rejection of the claim. See 37 C.F.R.
§ 4I.50(a)(l).
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Application 14/226,441
As discussed above, claims 1 and 11 are directed to an electronic
device and multi-protocol that determines what protocols the device supports
prior to connecting a storage device to the connector and the storage device
communicating with the electronic device. Claim 1 recites a method in
which the electronic device and multi-protocol connector can perform all the
steps without the storage device. See App. Br. 21 (Claims App'x).
Similarly, claim 11 recites an electronic device that has executable code that
can perform the steps without the storage device. Id. at 22-23 (Claims
App'x).
However, unlike claims 1 and 11, independent claim 20 recites that
the executable code is contained in the storage device, not the electronic
device or multi-protocol connector. The code on the storage device
"determines, using an operative coupling between a multi-protocol
connector and an electronic device ... prior to connecting a device to the
multi-protocol connector and without communicating with the device"
render the scope unclear." It is unclear how code on the storage device
causes the electronic device to make a determination, and particularly doing
so without the storage device communicating with the electronic device.
The contradiction of code on the storage device that causes the electronic
device to make a determination without communicating with the electronic
device renders this claim term "incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention." In re Packard, 751 F.3d
1307, 1311 (Fed. Cir. 2014) (per curiam). 4
4 In this proceeding, we apply the test for indefiniteness approved by the
Federal Circuit in Packard. Ex Parte McAward, Appeal 2015-006416
(PT AB August 25, 2017) (precedential).
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Application 14/226,441
Pursuant to our authority under 37 C.F.R. § 4I.50(b), we reject
independent claim 20 under 35 U.S.C. § 112, second paragraph, for
indefiniteness. We are mindful that, in rejecting claim 20, the Examiner did
not rely on§ 112, second paragraph. Accordingly, although we affirm the
Examiner's decision rejection claim 20, we designate the affirmance as a
new ground of rejection under 37 C.F.R. § 4I.50(b).
DECISION
We reverse the Examiner's decision rejecting claims 1-19.
We affirm the Examiner's decision rejecting claim 20. 5
We enter a new ground of rejection for claim 20 under 35 U.S.C.
§ 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
5 As noted above, we recognize that our affirmance of the Examiner's
decision to reject claim 20 rests on 35 U.S.C. § 112, second paragraph,
which was not relied on by the Examiner and/ or is reasoning not advanced
by the Examiner. Accordingly, we designate our affirmance as a new
ground of rejection under 37 C.F.R. § 4I.50(b).
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Application 14/226,441
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
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